• Merck Sharp & Dohme Corp. v. Wyeth LLCSome claims unpatentable
  PTAB · Jun 8, 2018 · IPR2017-00380 · APJ Erica A Franklin · IPR · Final written decision

  Claims 1–6, 10, 11, 14, 17, 19, and 20 are unpatentable as obvious over Prevenar and Chiron; claim 18 was not shown unpatentable.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “Based on the record as a whole, we determine that the Specification sets forth with reasonable clarity, deliberateness, and precision the definition of the term “polysaccharide,” as accurately represented by Petitioner, and acknowledged by Patent Owner. With respect to the phrase “polysaccharide-protein conjugates,” the Specification does not provide a” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “similarly precise definition. However, the Specification generally describes such conjugates in a manner that is consistent with the plain and ordinary meaning of the phrase. For example, the Specification explains that polysaccharides are “chemically activated (e.g., via reductive amination) to make the saccharides capable of reacting with the carrier protein.” Ex. 1001, 17:35–37. The Specification also explains that “[c]arrier proteins should be amenable to standard conjugation procedures.” Id. at 17:47–50. In particular, the Specification states, “[t]he chemical activation of the polysaccharides and subsequent conjugation to the carrier protein (i.e., a polysaccharide-protein conjugate) are achieved by conventional means.” Id. at 17:43–45. Moreover, as Patent Owner asserts, the Specification describes the polysaccharide-protein conjugates as an example of an “immunogenic composition.” Ex. 1001, 1:29–30. In light of those Specification descriptions, we determine that the broadest reasonable construction of the claim phrase “polysaccharide-protein conjugates” refers to an immunogenic composition resulting from reacting any antigenic saccharide element (or antigenic unit) commonly used in the immunologic and bacterial vaccine arts, including, but not limited to, a saccharide, an oligosaccharide, a polysaccharide, a liposaccharide, a lipo-oligosaccharide, a lipopolysaccharide, a glycosylate, a glycoconjugate, and the like with a carrier protein that is amenable to standard conjugation procedures.” slip op. at 10

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In the Institution Decision, we adopted Patent Owner’s description of the level of ordinary skill at that stage in the proceeding because it included a requirement for experience relating to polysaccharide-protein conjugates. Dec. Inst. 13. Based on the record as a whole, we determine that a declarant having significant experience relating to protein-silicone oil interactions also offers useful information relating to the subject matter of the challenged claims. Thus, we also recognize those having ordinary skill in the art relating to silicone-induced interactions/aggregation in pharmaceuticals. Thus, we adopt Patent Owner’s description of one having ordinary skill in the art of formulating polysaccharide-protein conjugate immunogenic compositions. Further, we describe one having ordinary skill in the art of silicone-induced interactions/aggregation in pharmaceuticals as either (a) a Ph.D. degree in the pharmaceutical sciences, physical chemistry or protein chemistry, at least two years of work experience involving researching silicone-induced interactions/aggregation in pharmaceuticals, or (b) a Master’s degree in the pharmaceutical sciences, physical chemistry or protein chemistry, at least four years of work experience involving researching silicone-induced interactions/aggregation in pharmaceuticals.” slip op. at 15

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “inadequately supported by the testimony of Drs. Morefield (Ex. 2121) and Thomson (Ex. 2124). The portions of the declarations of Drs. Morefield and Thomson relied upon by the Patent Owner do not refer to any evidence to support their opinions that a histidine buffer would not be a beneficial addition to the Prevenar formulation. Rather, those discussions sound of unsubstantiated theoretical concerns, and are speculative at best. At worst, certain of those theories has been refuted in the art. For example, Petitioner directs us to the testimony of one of its declarants, Dr. HogenEsch, who has a Ph.D. in Pathology and Immunology. Reply 13–16. Dr. HogenEsch explains persuasively that, contrary to the speculation of Drs. Morefield and Thomson, “histidine buffer had specifically been reported . . . not to interact with aluminum adjuvant through ligand exchange.” Ex. 1122 ¶ 43. In support of this testimony, Dr. HogenEsch quotes a disclosure from US Patent No. 6,251,678 B17 explaining that, although phosphate-containing buffers are generally not preferred because they may interact with aluminum adjuvants, “the non interaction of histidine . . . buffers with aluminum adjuvant was demonstrated by zeta potential measurements of the surface charge of the aluminum adjuvant.” Id. (quoting Ex. 1109, 3:24–30). We find that the unsupported testimony offered by Patent Owner’s declarants to be outweighed by rebuttal testimony from Dr. HogenEsch and the express disclosures by Chiron relied upon by Petitioner. Generally, as Petitioner and Dr. Kalonia note, Chiron teaches that buffers are a standard component of vaccines. Pet. 40; Ex. 1009 ¶ 128 (citing Ex. 1011, 1:6–7). More specifically, as Petitioner asserts, Chiron teaches that adding histidine buffer to aluminum-adjuvanted pneumococcal CRM197 conjugate formulations comprising a sodium salt is advantageously biocompatible and” slip op. at 23

  Patent outcomesUS 8,562,999 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,562,999
• Merck Sharp & Dohme Corp. v. Wyeth LLCSome claims unpatentable
  PTAB · Jun 8, 2018 · IPR2017-00378 · APJ Erica A Franklin · IPR · Final written decision

  Claims 1–6, 10, 11, 14, 17, 19, and 20 are unpatentable as obvious over Chiron, Smith, and Elan; claim 17 is also unpatentable with Peña. Claim 18 was not shown unpatentable.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “claim term “polysaccharide” is set forth in the Specification. Pet. 37–42. In particular, the Specification defines “polysaccharide” as including “any antigenic saccharide element (or antigenic unit) commonly used in the immunologic and bacterial vaccine arts, including, but not limited to, a ‘saccharide’, an ‘oligosaccharide’, a ‘polysaccharide’, a ‘liposaccharide’, a ‘lipo-oligosaccharide (LOS)’, a ‘lipopolysaccharide (LPS)’, a ‘glycosylate’, a ‘glycoconjugate’ and the like.” Ex. 1001, 16:32–38. Patent Owner similarly acknowledges that the term “polysaccharide” is expressly defined in the Specification. PO Resp. 11.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “In light of those Specification descriptions, we determine that the broadest reasonable construction of the claim phrase “polysaccharide-protein conjugates” refers to an immunogenic composition resulting from reacting any antigenic saccharide element (or antigenic unit) commonly used in the immunologic and bacterial vaccine arts, including, but not limited to, a saccharide, an oligosaccharide, a polysaccharide, a liposaccharide, a lipo-oligosaccharide, a lipopolysaccharide, a glycosylate, a glycoconjugate, and the like with a carrier protein that is amenable to standard conjugation procedures. Although we recognize that the claimed invention is directed toward an immunogenic composition, we also note that the claims do not recite any specific level of immunogenicity for the composition. The Specification explains that the invention “broadly relates to novel formulations which stabilize and inhibit precipitation of immunogenic compositions.” Ex. 1001, 2:53–55. The Specification describes aggregation as an indicator of physical/thermal stability of the immunogenic composition. Id. at 2:7–8. Breakdown of the composition to an undesired form (e.g., an aggregate) lowers the total concentration of the product. Id. at 1:43–46. Insofar as Patent Owner asserts that the claims require “measuring antigenicity to determine the extent of the loss of antigenicity due to silicone-induced aggregation,” as in Example 4 of the Specification, PO Resp. 14, we disagree. Although Example 4 discusses total antigenicity (and loss), the claims do not require the formulation to retain a particular degree of immunogenicity. Instead, the claims are directed to a formulation comprising a polysaccharide-protein conjugate, i.e., an “immunogen,” see, e.g., Ex. 1001, 14:19–23, wherein the formulation inhibits aggregation6 induced by the siliconized container means. The presence of a polysaccharide-protein conjugate confers the immunogenic element of the claim. While performing an immunoassay to measure loss of antigenicity, as in Example 4, may provide information regarding whether silicone-induced aggregation has occurred, such an assay is not required to meet the “protein-polysaccharide conjugate” element of the claim. Moreover, as explained in each example described in the Specification, the occurrence of aggregation/precipitation may be detected upon visual inspection. See, e.g., Ex. 1001, 27:6–11 (discussing visual inspection for precipitation).” slip op. at 10

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In the Institution Decision, we adopted Patent Owner’s description of the level of ordinary skill at that stage in the proceeding because it included a requirement for experience relating to polysaccharide-protein conjugates. Dec. Inst. 12–13. Based on the record as a whole, we determine that a declarant having significant experience relating to protein-silicone oil interactions also offers useful information relating to the subject matter of the challenged claims. Thus, we also recognize those having ordinary skill in the art relating to silicone-induced interactions/aggregation in pharmaceuticals. Thus, we adopt Patent Owner’s description of one having ordinary skill in the art of formulating polysaccharide-protein conjugate immunogenic compositions. Further, we describe one having ordinary skill in the art of silicone-induced interactions/aggregation in pharmaceuticals as either (a) a Ph.D. degree in the pharmaceutical sciences, physical chemistry or protein chemistry, at least two years of work experience involving researching silicone-induced interactions/aggregation in pharmaceuticals, or (b) a Master’s degree in the pharmaceutical sciences, physical chemistry or protein chemistry, at least four years of work experience involving researching silicone-induced interactions/aggregation in pharmaceuticals. We also note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We recognize each of Petitioner’s and Patent Owner’s declarants as qualified to provide the offered opinions on the level of skill and the knowledge of a person of ordinary skill in the art at the time of the invention with respect to formulating polysaccharide-protein conjugates and/or silicone-induced interactions/aggregation in pharmaceuticals. The relative weight that we assign such testimony, however, is subject to additional factors. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012) (“Opinions expressed without disclosing the underlying facts or data may be given little or no weight.”).” slip op. at 15

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We credit Dr. Kalonia’s testimony that a skilled artisan would have used a siliconized container to store Chiron’s formulation with persuasive weight, as that testimony is supported by Smith’s disclosure, as discussed above. On the other hand, we find that Patent Owner’s assertions and the related opinions by its declarants, e.g., Drs. Morefield (Ex. 2120) and Thomson (Ex. 2123), that a person of ordinary skill would not have found it obvious to use siliconized containers to store Chiron’s formulations are inadequately supported. For example, Patent Owner relies upon Dr. Morefield’s testimony that a siliconized container would not have been used in Chiron’s Example 8 because (a) the example involved a saccharide stability study, and introducing a siliconized container would have injected an unknown parameter into the experiment, and (b) the data demonstrates that the formulation was highly unstable. PO Resp. 25 (citing Ex. 2120 ¶¶ 36–42). However, Dr. Morefield has not provided any evidence to suggest that a siliconized container represented an “unknown” parameter. Rather, as evidenced by Smith and Elan, it was a known parameter, with a known solution. Nor has Dr. Morefield accurately characterized the data disclosed in Chiron’s Example 8 as demonstrating Chiron’s formulation was “highly unstable.” Chiron expressly concludes from the data in Example 8 that “[f]ree saccharide levels are thus stable for at least 1 month at 2–8°C, before and after packaging,” and that stability issues arose for two formulations, MenW125 and Men Y, only “[u]nder thermal stress conditions.” Ex. 1011, 16:3–6.” slip op. at 27

  Patent outcomesUS 8,562,999 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,562,999
• Celanese International Corporation v. Daicel CorporationSome claims unpatentable
  PTAB · May 3, 2018 · IPR2017-00163 · APJ Zhenyu Yang · IPR · Final written decision

  Claims 1 and 3–14 are unpatentable under the stated § 103 grounds; claim 2 was not shown unpatentable because the cited level-control teaching did not establish its claimed flow-rate limitation.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “definition is off-base and inappropriate for this proceeding.” Id. We disagree. As an initial matter, challenged claim 1 includes multiple steps other than the “condensation step” and the “separation and recycling step.” Thus, we decline to discount Patent Owner’s proposed definition of the ordinary skill level merely because it includes experience with an anhydrous process. More importantly, it is undisputed that acetic anhydride, like acetic acid, is produced through carbonylation processes. See, e.g., Ex. 1005, 3:26–50; Ex. 1027, 116–17. In our view, an ordinary artisan having production experience for acetic anhydride falls squarely within Petitioner’s definition: one with a working knowledge of carbonylation processes.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “In the Decision to Institute, we agreed with Petitioner and construed the term “buffering function” to mean “ability to temporarily retain.” Dec. 6–7. We also stated that there was no need to construe any other term expressly. Id. at 7. During trial, Patent Owner does not dispute these determinations. PO Resp. 3. Having considered the complete record developed at trial, we see no reason to change our interpretation of the claims.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Petitioner argues, and we agree, an ordinary artisan would have known that such fluctuating flow rates in a carbonylation process are economically disadvantageous. Pet. 27 (citing Ex. 1002 ¶¶ 80, 81). Indeed, Ochiai teaches “[w]hile a steady state of dry acetic acid product has been maintained from the distillation system per methanol feed rate, process inefficiency in the form of variable liquid levels and flow rates of the 26 intermediate process streams is economically disadvantageous.” Ex. 1009, 2:31–36. Patent Owner contends that an ordinary artisan would have understood the process inefficiencies referred to in Ochiai as limited to those in the reaction and flash evaporation steps, and not including inefficiencies in the decanter or in the condensation and separation steps. See id. at 35 (citing Ex. 2006 ¶¶ 120–122). We are not persuaded. As explained above, even though Ochiai focuses on the reactor and flasher, an ordinary artisan would have understood that the flow rates downstream of the flasher, including the overhead stream exiting the light ends column and into the decanter, would also fluctuate. See supra 18–19. Ochiai teaches it is important to “reduce variability of the flow rates of the intermediate streams relative to the methanol feed rate so as to improve process efficiency.” Ex. 1009, 4:5–9. Dr. Bhise testified, and we agree, that relative to the methanol feed, the overhead stream exiting the light ends column and into the decanter is an intermediate stream. See Ex. 1050, 136:10–15. As a result, an ordinary artisan would have understood that Ochiai suggests reducing the fluctuation of the overhead stream to improve process efficiency.” slip op. at 26

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “controlling the amount in the decanter, as evinced by its “repeated strong statements regarding the critical importance of concentration in an acetic acid production process.” PO Resp. 30–32. A reference teaches away “when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken” by the inventor. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). A reference may not teach away even if a particular solution is not the preferred solution or is inferior to another solution. In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004). In this case, despite pointing out that level control may not detect, or at least not detect in a timely fashion, some undesirable conditions in the process, Hallinan describes level control “works reasonably well in ensuring quality control.” Ex. 1011, 6:11–16. Thus, we do not find the focus on concentration in the invention of Hallinan amounts to teaching away because it “does not criticize, discredit, or otherwise discourage” the use of level control. See In re Fulton, 391 F.3d at 1201; see also In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (explaining “just because better alternatives exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes”). In sum, we agree with Petitioner that Hallinan teaches level controlling the decanter based on the fluctuating incoming flow rate, as recited in the wherein clause of claim 1. See Pet. 24–27.” slip op. at 24

  Patent outcomesUS 8,940,932 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,940,932
• Hamamatsu Corporation v. Sionyx, LLCSome claims unpatentable
  PTAB · Mar 28, 2018 · IPR2016-01910 · APJ Monica S Ullagaddi · IPR · Final written decision

  Claims 1, 2, 4–11, 13–18, 21, and 23–25 were held unpatentable; claims 12 and 26 were not, based on the stated anticipation and obviousness grounds.

  RulingsFinal written decision

  • BurdenMixed

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Furthermore, Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Thus, to prevail in an inter partes review, Petitioner must explain how the prior art anticipates the challenged claims and how the proposed combinations of prior art would have rendered the challenged claims unpatentable. We analyze the challenges presented in the Petition in accordance with the above-stated principles. slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s declarant, Dr. Souri, testifies that a person of ordinary skill in the art relevant to the ’591 patent “would hold a bachelor’s degree in physics, electrical engineering, or a related discipline, and have at least one year of experience working in the field of semiconductor processing or optoelectronic device design.” Ex. 1010 ¶ 32; Pet. 8. Patent Owner applies Petitioner’s proposed level of ordinary skill in the art for purposes of this proceeding. PO Resp. 7 n.2. Based on our review of the ’591 patent, the types of problems and solutions described in the ’591 patent and cited prior art, the testimony of Petitioner’s and Patent Owner’s declarants, and the arguments and evidence adduced at trial, we agree with and apply Petitioner’s definition of a person of ordinary skill in the art at the time of the claimed invention. See Inst. Dec. 14–15.” slip op. at 17

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “that it would not affect incident light.7 We agree with Petitioner that Nakashiba’s “contact surface S1 is exposed to air, which has a refractive index of about 1, and is formed on a silicon substrate, which has an index of refraction between 3.5-6.5, depending on the wavelength of light,” and “[t]hus, there will be an interaction (reflection and/or refraction) with [incident] light at the contact surface S1.” Reply 6 (citing Ex. 1014 ¶¶ 30, 31); see id. at 7. We credit the testimony of Dr. Souri, who testifies as to differences in the refractive indices of air, silicon, and a finger, and that, when there is a change in refractive index between materials, there is an interaction with light. See Ex. 2012, 119:22–121:16. Dr. Souri further testifies that [W]hen light is incident upon a boundary between materials of different refractive index, both refraction and reflection occur, as is depicted in the diagram above. The fraction of incident light that is refracted, and the fraction which is reflected, may be calculated by Fresnel’s equations, using the angles of incidence and refraction given by Snell’s law. . . . [A] person of ordinary skill in the art would understand that these reflection and refraction effects constitute an interaction with electromagnetic radiation; and, consequently, said person would understand that the roughened surface S1 of Nakashiba satisfies the requirements of the term “interact” as used in the claims of the ’591 patent.” slip op. at 23

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “a textured region interacting with electromagnetic radiation in a manner that results in an enhanced response and/or filtering of the radiation, the embodiments do not require the textured region to provide this enhanced response and/or filtering and further, do not define the term “interaction” as an enhanced response or filtering. See Liebel-Flarsheim, 358 F.3d at 908 (“[T]he specification does not describe the invention as limited to embodiments having pressure jackets, and none of the other reasons that have been invoked for giving claims a narrow reading are present.”). The claim language “interact with” is plainly broader than Patent Owner’s proffered construction, and the “position” limitations can be read to encompass features not described in the written description. See Liebel-Flarsheim, 358 F.3d at 908 (“The fact that a patent asserts that an invention achieves several objectives does not require that each of the claims be construed as limited to structures that are capable of achieving all of the objectives.”)” slip op. at 9

  Patent outcomesUS 8,680,591 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,680,591
• Neste Oil Oyj v. Reg Synthetic Fuels, LLCSome claims unpatentable
  PTAB · Jul 26, 2017 · IPR2013-00578 · APJ Christopher L Crumbley · IPR · Remand

  Claims 1, 3, 4, and 8 are unpatentable as anticipated by Craig; claims 2 and 5 are not proven unpatentable because Dindi is not prior art.

  RulingsRemand decision

  • RemandDecided for patent owner

    “To remove Dindi as a prior art reference, the record must establish either: (1) a conception and reduction to practice before the filing date of Dindi; or (2) a conception before the filing date of the Dindi patent combined with diligence and reduction to practice after that date. See Taurus IP, LLC v. DaimlerChrysler Corp., 726 F.3d 1306, 1323 (Fed. Cir. 2013). The Federal Circuit held that the record before us establishes, with sufficient corroboration, that Mr. Abhari conceived of the invention of claims 2 and 5 of the ’804 patent on April 29, 2008. REG Synthetic Fuels, 841 F.3d at 963. It is undisputed that Dindi was filed on June 13, 2008, and that Mr. Abhari filed on December 4, 2008 the application that issued as the ’804 patent. Dindi is not prior art—and, therefore, Neste’s ground of unpatentability fails—if either: (1) Mr. Abhari actually reduced to practice the invention of claims 2 and 5 between April 29 and June 13, 2008, or (2) Mr. Abhari exercised reasonably continuous diligence between June 13 and December 4, 2008, when the invention was constructively reduced to practice by filing of a patent application. Because, as set forth below, we find sufficient evidence of actual reduction to practice, we do not address Mr. Abhari’s alleged diligence.” slip op. at 5

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentableNot shown unpatentable

    “To remove Dindi as a prior art reference, the record must establish either: (1) a conception and reduction to practice before the filing date of Dindi; or (2) a conception before the filing date of the Dindi patent combined with diligence and reduction to practice after that date. See Taurus IP, LLC v. DaimlerChrysler Corp., 726 F.3d 1306, 1323 (Fed. Cir. 2013). The Federal Circuit held that the record before us establishes, with sufficient corroboration, that Mr. Abhari conceived of the invention of claims 2 and 5 of the ’804 patent on April 29, 2008. REG Synthetic Fuels, 841 F.3d at 963. It is undisputed that Dindi was filed on June 13, 2008, and that Mr. Abhari filed on December 4, 2008 the application that issued as the ’804 patent. Dindi is not prior art—and, therefore, Neste’s ground of unpatentability fails—if either: (1) Mr. Abhari actually reduced to practice the invention of claims 2 and 5 between April 29 and June 13, 2008, or (2) Mr. Abhari exercised reasonably continuous diligence between June 13 and December 4, 2008, when the invention was constructively reduced to practice by filing of a patent application. Because, as set forth below, we find sufficient evidence of actual reduction to practice, we do not address Mr. Abhari’s alleged diligence.” slip op. at 5

  • ExcludeNot reached

    “As noted above, the Federal Circuit vacated our decision on Neste’s Motion to Exclude as to Exhibits 2012, 2013, 2057, and 2062, for further consideration of the hearsay objections in light of the decision on appeal, “because [they] may be relevant for diligence and reduction to practice.” REG Synthetic Fuels, 841 F.3d at 965. Upon review, however, we have determined that we need not rely on any of the exhibits in question to reach our decision in REG’s favor. For this reason, Neste’s objections to the exhibits are moot, as we would have found against Neste on the merits regardless of the outcome of the Motion.” slip op. at 19

  Patent outcomesUS 8,231,804 mixed
  § 102 anticipation
  Patents in suitUS 8,231,804
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Dec 15, 2016 · IPR2015-01222 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–11 and 13–15 are unpatentable as obvious over Strubbe and Rae; claims 12 and 16–20 were not shown unpatentable because the petition did not tie the connection-fee limitation to those references.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “We found Patent Owner’s arguments and evidence to be insufficient to show a real party-in-interest issue. Discovery Order 8–10. First, we found the mere existence of the relationship between Petitioner and a parent company (American Securities) to be insufficient to demonstrate a real party-in-interest issue. Discovery Order 8. In addition, we determined the evidence did not show that American Securities and Petitioner have “corporate boundaries that were inextricably intertwined.” Discovery Order 8. Second, we found the existence of common directors or employees between American Securities and Petitioner to be insufficient to show a real party-in-interest issue, unless the directors controlled or participated in the filing of the proceedings. Discovery Order 9. We found insufficient evidence that common officers between American Securities and Petitioner 9 were involved in the filing of the present proceedings or had the ability to direct the filing of the present proceedings. Discovery Order 9. Nor did we find persuasive evidence that American Securities provided any prior art to Petitioner in the instant proceedings. Discovery Order 9. Third, we found ambiguous and unreliable statements made by a non- lawyer CEO during settlement negotiations covering “ongoing intellectual property disputes” (see Discovery Motion 1) failed to demonstrate that American Securities funded and controlled the instant proceeding. Discovery Order 9; see Exs. 2006, 2011.” slip op. at 9

  • ExcludeMotion to exclude, deniedDenied

    “Similarly to the posture of Petitioner’s First Motion to Exclude, the current situation does not require us to assess the merits of Petitioner’s Second Motion to Exclude. See Discovery Order, 13 (indicating that Patent Owner’s evidence was insufficient, “even without excluding Patent Owner’s supporting evidence”). According to Petitioner, the two declarations filed by Patent Owner in support of its Motion for Additional Discovery allegedly recount statements made by Petitioner’s CEO during settlement discussions between Patent Owner and GTL. Mot. Exc. 2nd, 1–2.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “We agree with Petitioner. One portion of the Specification cited by Patent Owner details: “[t]he list of items displayed for the inmate may be selected based upon data stored in the inmate's profile on JAMS database 115.” Ex. 1001, 3:61–63 (emphasis added). The conditional nature of the selection need not be incorporated into claim 8. In addition, the instant claim language would also read on a display of all items, with indications of 18 availability with each item for the inmate, such that all items would be displayed instead of Patent Owner’s truncated listing. As such, we conclude that Patent Owner’s proposed construction of the language of claim 8 is overly narrow and is not adopted in the analysis that follows.” slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s declarant, Dr. Leonard J. Forys, testifies that one of ordinary skill in the art “would have a bachelor’s degree in Electrical Engineering, Computer Science, or an equivalent field as well as at least 2–3 years of academic or industry experience in a call center technology particularly computer telephony integration and in telephone networks in general.” Ex. 1003 ¶ 30; see Pet. 10 (citing Ex. 1003 ¶¶ 29–30). Patent Owner’s declarant, Mr. Ivan Zatkovich, proposes that Petitioner’s definition be adopted. Ex. 2012 ¶ 31. As such, we adopt Dr. Forys’ definition of the level of ordinary skill in the art for the purposes of the analysis below.” slip op. at 21

  Patent outcomesUS 8,750,486 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,750,486
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Dec 14, 2016 · IPR2015-01225 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1–4 and 6–8 are unpatentable as obvious over the instituted combinations; claim 5 was not shown unpatentable over Magee, Nussbaum, and Juang.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “We found Patent Owner’s arguments and evidence to be insufficient to show a real party-in-interest issue. Discovery Order 8–10; Inst. Dec. 18. First, we found the mere existence of the relationship between Petitioner and a parent company (American Securities) to be insufficient to demonstrate a real party-in-interest issue. Discovery Order 8; Inst. Dec. 18. In addition, we determined the evidence did not show that American Securities and Petitioner have “corporate boundaries that were inextricably intertwined.” Discovery Order 8; Inst. Dec. 18.” slip op. at 15

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther

    “In the Decision to Institute, after considering constructions of SCF rating proffered by Petitioner and Patent Owner, we determined that the ’663 patent did not provide the requisite clarity, deliberateness, and precision necessary to define the term SCF rating, and we declined to read the limitation from the preferred embodiment into claim 1. Inst. Dec. 10–14 (citing Paulsen, 30 F.3d at 1480; Superguide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004); Am. Academy of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004); Van Geuns, 988 F.2d at 1184). We credited the testimony of Petitioner’s declarant, Homayoon Beigi, D. Eng’g Sci., that “[t]here is no definition of ‘Suspicious Call Finder (SCF) rating’ that would be immediately known to a person of ordinary skill in the art.” Inst. Dec. 14 (quoting Ex. 1003 ¶ 45).” slip op. at 24

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownOther

    “data from said selected portion of speech.” In the Decision to Institute, we determined that “prosody” needed express construction, although neither party had proffered an express construction for the term. Inst. Dec. 15–16. We identified an express definition of “prosody” in the Specification: The word “prosody” (defined at Princeton University as ‘the patterns of stress and intonation in a language’) is often used in the field of affective computing (computing relating to emotion) to refer to emotion-indicating characteristics of speech.” Ex. 1001, 6:36–40; see Inst. Dec. 15 (quoting Ex. 1001, 6:36–40). Based on that definition, we preliminarily construed “prosody data” to mean “data reflecting emotion-indicating characteristics of speech” in our Decision to Institute and further determined that, on the partially-developed, pre-institution record, that the prosody construction was consistent with the plain language of claim 8. Inst. Dec. 15.” slip op. at 26

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s declarant, Dr. Beigi, testifies that one of ordinary skill in the art “would have a B.S. degree in Electrical Engineering, Computer Science, or an equivalent or related field (or comparable industry experience), as well as at least 1–3 years of academic or industry experience in speech processing.” Ex. 1003 ¶ 23; see Pet. 9–10 (citing Ex. 1003 ¶ 32) (asserting level of ordinary skill in the art). Patent Owner adopts Petitioner’s definition without contesting it. PO Resp. 10. Having reviewed the prior art asserted in this proceeding (see, e.g., Exs. 1007–1011), we also adopt the level of ordinary skill in the art employed by both Petitioner and Patent Owner.” slip op. at 30

  Patent outcomesUS 8,886,663 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,886,663
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Dec 7, 2016 · PGR2015-00013 · APJ Kevin F Turner · PGR · Final written decision

  Claims 1–4, 7–19 were held unpatentable as obvious; claims 5, 6, and 20 were not shown unpatentable over Reinhold, Walters, and Dudovich.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “We found Patent Owner’s arguments and evidence to be insufficient to show a real party-in-interest issue. Discovery Order 8–10; Dec. 8. First, we found the mere existence of the relationship between Petitioner and a parent company (American Securities) to be insufficient to demonstrate a real party-in-interest issue. Discovery Order 8. In addition, we determined the evidence did not show that American Securities and Petitioner have “corporate boundaries that were inextricably intertwined.” Discovery Order 8. Second, we found the existence of common directors or employees between American Securities and Petitioner to be insufficient to show a real party-in-interest issue, unless the directors controlled or participated in the filing of the proceedings. Discovery Order 9. We found insufficient evidence that common officers between the American Securities and Petitioner were involved in the filing of the present proceedings or had the ability to direct the filing of the present proceedings. Discovery Order 9. Nor did we find persuasive evidence that American Securities provided any prior art to Petitioner in the instant proceedings. Discovery Order 9.” slip op. at 11

  • PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner’s motion to exclude Exhibits 1013, 1014 and 1015 is denied. As Patent Owner points out, 37 C.F.R. § 42.6(a)(3) indicates that “[a]rguments must not be incorporated by reference from one document into another document.” We are not persuaded, however, that Petitioner is attempting to incorporate by reference; Exhibits 1013, 1014, and 1015 are cited by Petitioner’s declarant, not incorporated by reference. If Petitioner’s declarant or the cited exhibits contained arguments not made in a paper, we would likely ignore such arguments. In this instance, Petitioner is making of record the documents cited, which is generally laudatory, so that a reader can determine for herself that cited facts are supported. We are not persuaded that the cited exhibits are “irrelevant.” Additionally, we find no support for Patent Owner’s contention that exhibits must be cited by “papers,” and not other exhibits. Many exhibits, such as declarations, prior art references, and deposition transcripts, cite to other exhibits in normal trial practice. Accordingly, Patent Owner’s Motion to Exclude Exhibits 1013, 1014, and 1015 is denied.” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s declarant, Mr. Frank Koperda, testifies that one of ordinary skill in the art would have a Bachelor of Science degree in electrical engineering, computer science, or an equivalent field, as well as at least 2–5 years of academic or industry experience in the telecommunications industry. Ex. 1002 ¶ 19; see Pet. 5 (asserting level of ordinary skill in the art). Patent Owner’s declarant, Mr. Stuart J. Lipoff, largely adopts Mr. Koperda’s level of ordinary skill in the art, adding that such artisans should have experience “in the generation of billing statements or cost accounting reports.” Ex. 2012 ¶ 33. We are not persuaded that such billing or accounting experience is necessary “to fully understand the ’280 patent disclosure.” Id. Having reviewed the prior art asserted in this proceeding (see, e.g., Exs. 1003, 1007, 1006, 1008), we also adopt the level of ordinary skill in the art employed by Petitioner’s declarant, where Patent Owner’s declarant acknowledges that his analysis would be the same under Mr. Koperda’s level of ordinary skill in the art. Ex. 2012 ¶ 34.” slip op. at 23

  Patent outcomesUS 8,855,280 mixed
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 8,855,280
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Nov 30, 2016 · IPR2015-01220 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1–5 and 12–17 are unpatentable as obvious; claims 7, 9–11, and 18–26 were not shown unpatentable on the asserted combinations.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “Thus, Patent Owner has not introduced evidence reasonably bringing into question Petitioner’s identification of the real party-in-interest in this proceeding. Accordingly, the evidence of record does not support a determination that American Securities had a role in funding or controlling this proceeding, or could have exercised control over this proceeding. 11 For these reasons, we determine that a preponderance of the evidence does not show that American Securities is an unnamed real party-in-interest in this proceeding. As such, we determine that Petitioner’s real party-in-interest identification at the time of filing the Petition remains valid.” slip op. at 11

  • ExcludeMotion to exclude, deniedDenied

    “For these additional reasons, we determine that, even without excluding Exhibits 2006 and 2011, the preponderance of evidence does not show that American Securities is an unnamed real party-in-interest in this proceeding. Accordingly, Petitioner’s Second Motion to Exclude Exhibits 2006 and 2011 is dismissed as moot.” slip op. at 15

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “construed also undermine Petitioner’s position. “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). On the other hand, a preamble, however, “generally is not limiting when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention.” Id. at 809. The only limitations in the body of independent claim 22—the two biometric sensors—are not structurally complete in themselves. Rather, the telephone handset is required to describe a structurally complete invention that includes two biometric sensors. Without the telephone handset as an element, the claim merely recites two unconnected biometric sensors without any structure—a structurally incomplete invention. Furthermore, the telephone handset recited in the preamble does not duplicate the biosensor limitations in the body of the claim. Thus, we conclude that the telephone handset is essential structure and is necessary to give life, meaning, and vitality to the claim. This weighs toward a determination that independent claim 22 requires a telephone handset. See Catalina Mktg. Int’l, 389 F.3d at 808–09.” slip op. at 25

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner, however, does not acknowledge that both Dr. Beigi and Dr. Caloyannides include electrical engineering as a field of study in the respective level of ordinary skill. Thus, we do not agree with Patent Owner’s statement that Dr. Beigi’s proposed “academic requirements do not provide this background. See Ex. 1003 ¶ 34 (Dr. Beigi opining that “one of ordinary skill in the art (a “POSA”) would have a Bachelor of Science (B.S.) degree in electrical engineering, computer science, or an equivalent or related field”). Because both experts specify electrical engineering as an academic field of study but only Dr. Beigi specifies computer science, we understand the disagreement of the parties to be whether computer science is a relevant academic field of study. We do not agree with Patent Owner’s contention that “bachelor’s level degree in electrical engineering or physics is necessary to understand both the various data/network communication aspects of the claimed invention as well as the mathematics underlying biometric systems.” See PO Resp. 7. Contrary to Patent Owner’s contention, the invention as claimed recites elements and functions using a high-level of abstraction with little, if any, technical detail regarding “the data/network communication aspects of the claimed invention.” For example, independent claims 1 and 12 recite methods that include broad functional steps of authorizing, continuously monitoring, verifying, and monitoring a biometric training with 30 little, if any, technical detail. Similarly, the call processing system recited in independent claim 13 and the biometric telephone handset recited in independent claim 22 recite elements that perform broad functions with little, if any, technical detail. Thus, the plain language of the claims undermines Patent Owner’s contention that an understanding of “both the various data/network communication aspects of the claimed invention as well as the mathematics underlying biometric system” necessitate an electrical engineering or physics academic degree.” slip op. at 30

  Patent outcomesUS 7,494,061 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,494,061
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Nov 29, 2016 · PGR2015-00014 · APJ Barbara A Benoit · PGR · Final written decision

  Claims 1, 4–10, and 13–18 are unpatentable as obvious; claims 2, 3, 11, 12, and 19–25 were not shown unpatentable because the prior art did not teach the required video-communication eligibility query and confirmation.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “Thus, Patent Owner has not introduced evidence reasonably bringing into question Petitioner’s identification of the real party-in-interest in this proceeding. Accordingly, the evidence of record does not support a determination that American Securities had a role in funding or controlling this proceeding, or could have exercised control over this proceeding. For these reasons, we determine that a preponderance of the evidence does not show that American Securities is an unnamed real party-in-interest in this proceeding. As such, we determine that Petitioner’s real party-in-interest identification at the time of filing the Petition remains valid.” slip op. at 16

  • ExcludeDenied

    “Similarly to the posture of Petitioner’s First Motion to Exclude, the current situation does not require us to assess the merits of Petitioner’s Second Motion to Exclude. See Discovery Order, 13 (indicating that Patent Owner’s evidence was insufficient, “even without excluding Patent Owner’s supporting evidence”). According to Petitioner, the two declarations filed by Patent Owner in support of its Motion for Additional Discovery allegedly recount statements made by Petitioner’s CEO during settlement discussions between Patent Owner and GTL. Mot. Exc. 2nd, 1–2.” slip op. at 18

  • Skill levelSkill level board ownOther

    “Petitioner’s declarant, Kevin Jeffay, Ph.D., testifies that one of ordinary skill in the art would have a Bachelor of Science degree in computer science (or an equivalent field), as well as at least 2–3 years of academic or industry experience in software development (or comparable industry experience). Ex. 1002 ¶ 30; see Pet. 12 (citing Ex. 1002 ¶ 30) (asserting level of ordinary skill in the art). Dr. Jeffay indicates that he bases his opinion of the level of ordinary skill on the disclosure of the ’525 patent. Ex. 1002 ¶ 30. Patent Owner’s declarant, Mr. Stuart J. Lipoff, adopts Dr. Jeffay’s level of ordinary skill in the art. Ex. 2014 ¶ 36. Having reviewed the prior art asserted in this proceeding (see, e.g., Exs. 1009, 1010, 1012), we also adopt the level of ordinary skill in the art employed by both Petitioner’s declarant and Patent Owner’s declarant.” slip op. at 26

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedOther

    “Furthermore, we credit Dr. Jeffay’s testimony that a skilled artisan would have been able to incorporate Virtanen’s voice-to-video switching in Torgersrud’s computer system. Ex. 1002 ¶ 44. Dr. Jeffay’s testimony relied on “sophistication of software packages to manage audio and video streams on personal devices available in 2014” and identified specific “Software Development Kits” available to develop software for mobile devices. Id. Moreover, he testified that an undergraduate student would have been able to implement the necessary modification and testified that he was aware of a specific example of such a system that one of his undergraduate students developed in 1995. Id. We weigh Dr. Jeffay’s testimony more heavily than Mr. Lipoff’s testimony. Dr. Jeffay’s testimony is based on specific reasons, whereas Mr. Lipoff’s testimony lacks sufficient supporting analysis and is based on a faulty premise that a central communications processing system would need to be inserted in Torgersrud’s system. Compare Ex. 1002 ¶ 44, with Ex. 2014 ¶¶ 63–64 (“I believe a skilled artisan would need to be familiar with communication processing systems of a controlled facility, like in” slip op. at 56

  Patent outcomesUS 8,929,525 mixed
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 8,929,525

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.